Microsoft Corporation v. Devansh Mehta
Claim Number: FA0603000652942
Complainant is Microsoft Corporation (“Complainant”), represented by Martin B. Schwimmer, of Schwimmer Mitchell Law Firm, 40 Radio Circle, Suite 7, Mt. Kisco, NY 10549. Respondent is Devansh Mehta (“Respondent”), 2800 SW Williston Rd #313, Gainesville, FL 32608.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <msnnethosting.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 2, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 6, 2006.
On March 2, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <msnnethosting.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 29, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@msnnethosting.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
A. Microsoft’s
Rights in the MSN Mark.
1.
Microsoft provides numerous
forms of information services under its famous MSN trademark, including hosting
services via its MSN Network.
2. The United States Patent and Trademark Office (“USPTO”) has granted federal trademark registrations for the MSN mark in numerous classes of goods and services, including the following:
|
Mark |
International
Class |
Registration No. |
Registration Date |
|
MSN |
25 |
2,498,608 |
Oct. 16, 2001 |
|
MSN |
16 |
2,751,320 |
Aug. 12, 2003 |
|
MSN |
16 |
2,459,987 |
June 12, 2001 |
|
MSN |
9 |
2,608,310 |
Aug. 13, 2002 |
|
MSN &
butterfly logo |
42 |
2,789,099 |
Dec. 2, 2003 |
|
MSN &
butterfly logo |
42 |
2,808,938 |
Jan. 27, 2004 |
|
MSN |
35, 36, 38, 39, 41, 42 |
2,600,020 |
July 30, 2002 |
These registrations have first use dates prior to that of the Names.
3. Complainant draws particular attention to Reg. Nos. 2,789,099, 2,808,938, and 2,600,020, which cover, “hosting the web sites of others directed to small business customers and small business issues on computer server for a global computer network...”
4. Microsoft has spent substantial time, effort and money advertising and promoting the MSN mark throughout the world. As a result, the MSN mark has become distinctive and well known, and Microsoft has developed an enormous amount of goodwill in the mark, which goodwill has been recognized by UDRP panels. Microsoft Corp. v. Cupcake City, WIPO Case No. D2000-0818 (Oct. 22, 2000) (“Microsoft…provides internet services…under the famous MSN trademark.”); see also, Microsoft Corporation v. My Speedy Net Phone, WIPO Case No. D2003-0359 (July 15, 2003)(“MSN has become one of the world’s most popular Internet destinations.”); see also, Microsoft Corporation v. Mediaweb, WIPO Case No. D2003-0538 (Sept. 17, 2003) (“[Microsoft’s] MSN Internet portals are among the world’s most popular Internet destinations with more than 300 million monthly unique users worldwide.”); see also, Microsoft Corporation v. SysWebSoft S.R.L and Martin Caetano, WIPO Case No. D2003-0528 (Aug. 25, 2003) (Microsoft owns the “world famous” MSN trademark.); Cf., America Online Inc. v. David Nasi, NAF Case No. FA0111000102525 (Feb. 1, 2002) (The use of the two famous trademarks MSN and AOL together is likely to confuse consumers).
5. In connection with the MSN mark, Microsoft has established an Internet website located at domain names comprised of the MSN mark, including MSN.COM and MSN.NET (collectively, the “MSN Websites”). The MSN.NET site points to MSN.COM. The MSN Websites allows computer users throughout the world to access information regarding Microsoft and its products and services and to use and enjoy the Internet services provided by Microsoft.
6. The MSN trademark became famous for Internet services prior to Respondent’s adoption of MSNNETHOSTING.COM.
FACTUAL AND LEGAL GROUNDS
B. The Infringing Domain Name is
Confusingly Similar to the Mark.
7.
The domain name
MSNNETHOSTING.COM is confusingly similar to Complainant’s Mark, incorporating
the famous MSN Mark in its entirety.
8. Furthermore, the addition of the term NET HOSTING aggravates confusion as the MSN mark is closely associated with Internet services, including web-hosting, e-mail, web design, and domain name registration. Microsoft’s famous MSN.COM and MSN.NET sites provide a variety of internet services, including one of the worlds most popular e-mail services, Hotmail and blog hosting services, such as MSN Spaces. Therefore it is likely that one would assume that MSNNETHOSTING was affiliated with Microsoft’s famous MSN and MSN.NET Internet services.
C.
Respondent Has No Legitimate Interest or Rights in the
Infringing Domain Name.
9. Respondent has no legitimate interest in the Infringing Domain Name. Respondent has no connection or affiliation with Microsoft and has not received any license or consent, express or implied, from Complainant to use the MICROSOFT Mark in a domain name or in any other manner.
10. Respondent’s trading name in its Whois data is Devansh Mehta. A copy of a resume for “Devansh (Dave) P. Mehta” can be found on the Respondent’s website, at www.msnnethosting.com/hiredavenow/.
11. Complainant alleges that no third party can make bona fide trading name use of MSNNETHOSTING.COM as that name is confusingly similar to Complainant’s famous MSN trademark.
12. The Respondent offers services that are competitive to those provided by Complainant, including Respondent’s website design service and hosting services. The Infringing Domain Name MSNNETHOSTING.COM resolves to a web page containing windows for various e-business solutions such as: “Web Design and Hosting”, “Register Domains” and a “Portfolio” window which illustrates web sites designed or hosted by Respondent.
13. An aggravating factor is that Respondent provides an entry bar to Complainant’s MSN Search services at the very top of its homepage. The results lead to Complainant’s actual search results at search.msn.com. When Microsoft first learned of Respondent’s registration and use of the Infringing Domain Name, Respondent was utilizing Complainant’s MSN butterfly logo as the top element of its page.
14. When Microsoft then put Respondent on notice of its rights Respondent did not put forth any explanation or theory as to why it might be entitled to register and use the name (and it could not). Respondent to date has provided no substantive written communication to Microsoft. It did however remove the butterfly logo (while retaining the MSN Search).
15. In short, Respondent is not making fair use of the Mark.
D. Respondent
Registered and Used the Infringing Domain Name in Bad Faith.
16. Respondent’s bad faith is manifested in several ways. There is no question as to whether Respondent was aware of the famous MSN Mark and in fact, prior to receipt of Complaint’s demand letter, Respondent depicted the MSN butterfly logo on its home page and provides MSN Search services. Because of the fame of the registered MSN Marks, Respondent had notice of the rights that Microsoft enjoys in its Mark. See 15 U.S.C. § 1072; Phillip Morris U.S.A. v. Sylvester Spinetta, WIPO Case No. D2004-0317 (June 13, 2004) (fame of the MARLBORO mark placed Respondent on constructive notice of rights).
17. The fame and reputation of a Complainant’s Mark is persuasive in determining a Respondent’s bad faith intent. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (2000), the panel found that:
[I]t is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name <telstra.org>. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration.
Id. at ¶7.7.
No other conclusion is possible in this case, in light of the fame of the MSN Mark.
18.
Furthermore Respondent
has used the domain name to divert Internet users to an active website, from
which he is reaping commercial benefit by selling services closely linked with
those provided by Microsoft. The
Respondent was therefore “unjustly enriched by a potential increase in users
who are legitimately seeking a website operated by Complainant but mistakenly
visited Respondent’s website.” ESPN, Inc. v. Players Sportsbook &
Casino, NAF Claim No. FA95402 (Sept. 19, 2000). Respondent must have
expected use of “MSNNETHOSTING” which is confusingly similar to Microsoft’s own
MSN Mark and would cause harm to Microsoft.
The Domain Name wholly incorporate the MSN Mark and are so “obviously
indicative” of Microsoft’s products and services that Respondent’s use of this
domain name would “inevitably lead to confusion of some kind.” AT&T
Corp. v. Rice, WIPO Case No. D2000-1276 at § 6 (Nov. 25, 2000).
19.
Even if Respondent had
not used the “MSNNETHOSTING.COM” domain name to divert Internet users to an
active website, his actions would still constitute registration and use in bad
faith. The mere fact of diversion –
regardless of the content of Respondent’s websites – is evidence of bad faith
use of a domain name. Prior ICANN
panels have found that this type of activity – using a domain name
comprised of a well-known trademark to attract users to the registrant’s website –
constitutes a bad faith use of the domain name. See Big Dog Holdings, Inc.
v. Day, NAF Claim No. FA93554, at ¶8 (March 9, 2000)
(holding that diversion of traffic to infringing websites by using well-known
trademarks in domain names is bad faith use); Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case no.
D2000-0226 (May 17, 2000) (Mere use of a holding page in connection with a
famous mark constitutes bad faith use).
20.
Additionally, the Respondent’s bad faith is further evidenced by
his use if the MSN logo and the immediate modification of the home page after
receiving the Complainant’s demand letter, as stated above. The webpage
previously incorporated the famous MSN Butterfly logo in conjunction with a
search window in the upper left corner of the webpage.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, produces and markets computer software products and is a leading provider of information services and hosting services through its MSN Network. In connection with the provision of these goods and services, Complainant has registered numerous marks with the United States Patent and Trademark Office (“USPTO”), including the famous MSN mark (Reg. No. 2,498,608 issued October 16, 2001).
Respondent registered the <msnnethosting.com> domain name on June 3, 2003. Respondent’s domain name resolves to a website that offers products and services that compete with Complainant’s products and services.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the MSN mark through
registration with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861
(Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks
hold a presumption that they are inherently distinctive [or] have acquired
secondary meaning.”).
Complainant contends Respondent’s <msnnethosting.com>
domain name is confusingly similar to Complainant’s MSN mark. The disputed domain name features
Complainant’s entire mark and adds the generic terms “net” and “hosting,” which
have a direct connection to Complainant’s business. Panels have long held the addition of generic terms, particularly
those with a direct connection to Complainant’s business, fails to properly
distinguish a domain name from a well-known mark. The Panel finds Respondent’s <msnnethosting.com>
domain name is confusingly similar to Complainant’s MSN mark for purposes of
Policy ¶4(a)(i). See Am. Int’l
Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003)
(finding that the addition of the term “assurance,” to the complainant’s AIG
mark failed to sufficiently differentiate the name from the mark under Policy
¶4(a)(i) because the appended term related directly to the complainant’s
business); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA
146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain
names, which incorporated the
complainant’s entire mark and merely added the descriptive terms “traffic
school,” “defensive driving,” and “driver improvement” did not add any
distinctive features capable of overcoming a claim of confusing similarity).
The Panel finds
Policy ¶4(a)(i) satisfied.
Complainant contends Respondent lacks rights or legitimate interests in the <msnnethosting.com> domain name. Complainant’s submission amounts to a prima facie case pursuant to the Policy. Because evidence of rights or legitimate interests is uniquely in Respondent’s possession, the burden of proof regarding Policy ¶4(a)(ii) shifts from Complainant to Respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶4(a)(ii).”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends and has submitted evidence Respondent is using the <msnnethosting.com> domain name to operate a website that features web design and web hosting services for commercial gain which directly compete with Complainant’s own business (and even used Complainant’s “butterfly logo” for a period of time). In light of such evidence, the Panel finds that using a confusingly similar domain name to provide competing services is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶4(c)(iii). See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).
Moreover, Complainant contends Respondent is neither
commonly known by the <msnnethosting.com> domain name nor licensed
to register a domain name featuring Complainant’s MSN mark. Without affirmative evidence suggesting
otherwise, the Panel finds Respondent has failed to show that he is, in fact,
commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The Panel finds Policy ¶4(a)(ii)
satisfied.
Complainant asserts Respondent’s competing use of the disputed domain name is evidence of bad faith registration and use. The Panel finds Respondent is using the disputed domain name to operate a website that offers services which directly compete with Complainant. Respondent’s intent to trade off of Complainant’s goodwill amounts to disruption under Policy ¶4(b)(iii) and is evidence of bad faith registration and use. See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the respondent registered and used the domain name primarily for the purpose of disrupting the business of the complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to the complainant’s services under the OPENMAIL mark).
Complainant contends Respondent’s competing use of the infringing domain name will likely cause confusion among Internet users as to Complainant’s sponsorship of or affiliation with the <msnnethosting.com> domain name. The Panel finds such likelihood is further evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <msnnethosting.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, , Panelist
Dated: May 23, 2006
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